Article 34 Paperwork (Response to WO) (3) Complete set of replacement sheets for amended claims, specification, and/or drawings Clean Set Only (no mark-ups)

Article 19 v. 34 Amendments If Demand filed, no need to amend claims under Article 19, unless you want provisional protection. Article 19 Amendments are published, so you may gain provisional rights to the published Article 19 claim amendments (i.e., damages clock) Article 19 Only need to amend the claims (not drawings or specification) Don’t want to make any arguments Article 34 Does not require to first file Article 19 Amendments Want to Argue Need to makes changes to specification, drawings (or claims)

PCT Examination Report Type of Examination Report Depends on Whether Applicant Requested Examination (Chapter II) or Not

PCT Search (ISA)- Typical Flow ISA Written Opinion (WO) PCT Application Searching Authority (ISA) Not Public Int’l Bureau (IB) Int’l Search Report (ISR)

PCT Chapter 1 Only- Typical Flow (i.e., no Demand for Examination) Published Not Public International Preliminary Report on Patentability (IPRP) ISA Written Opinion (WO) 30 Months

PCT Chapter 1 Only From: http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf

PCT Chapter 1 Examination Report Paperwork International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an international preliminary examination report has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority. In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.

PCT Search (ISA)- Typical Flow ISA Written Opinion (WO) PCT Application Searching Authority (ISA) Not Public Int’l Bureau (IB) Int’l Search Report (ISR)

PCT Chapter 2- Typical Flow Published Chapter 2 (i.e., Demand for Examination) ISA Written Opinion (WO) Int’l Preliminary Examination Authority (IPEA) Int’l Preliminary Examination Report (IPER) 30 Months

PCT Chapter 2 From: http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf

PCT Chapter Examination Report Paperwork International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..

PCT National Phase Please see Nationalizing PCT Applications in the US presentation that compares the 371 National Stage Procedure with the Bypass Continuation Application Procedure http://www.slideshare.net/wemmh/best-way-to-nationalize-pct-applications-in Presentation is Dated- Some Changes Required Due to AIA Updated Presentation Coming Soon!

PCT Timetable PCT Timetable Months from Earliest Priority Date Deadline/Action 29th-30th Month Send Reminder Letter(s)/Call Client for Nationalization Instructions- If instructions are not received, you need to remind the client. What you need to do- Send a copy of the nationalization letter stamped “Reminder” and/or call the client. 30th Month Deadline to Nationalize the PCT Application- For most countries, this is the deadline when you need to nationalize the application. Note that you can nationalize the PCT application at any time, but it might be helpful to at least wait until after you receive the International Search Report before deciding whether or not to nationalize. What you need to do- Send the application to the foreign associate(s) in the countries where the client wishes to seek patent protection

Sign up for PCT Newsletter at www.wipo.int Final Item Sign up for PCT Newsletter at www.wipo.int Updates on Fee, ISA’s, etc.

Woodard, Emhardt, Moriarty, McNett & Henry LLP Need More Information? Please Contact: Chuck Schmal (cschmal@uspatent.com) Woodard, Emhardt, Moriarty, McNett & Henry LLP 111 Monument Circle, Suite 3700 Indianapolis, IN 46204 (317) 634-3456 www.uspatent.com

Patent Cooperation Treaty (PCT) Practice Overview Patents- Practical Aspects of International Patent Procurement/Prosecution June 2015